European Union: new decision relating on the effectiveness of coercive measures relating to trade marks

By decision of 12 April 2011 (C-235/09), issued in the proceedings between DHL Express France SAS and Chronopost SA, the European Union Court of Justice ruled on the effectiveness of coercive measures issued by Community trade mark courts. In particular the Court of Justice has stated (while interpreting Article 98(1) of EC Regulation No 40/94), that the prohibition against further infringement or threatened infringement of a Community trade mark, issued by a Community trade mark court, is extended to all the Member States of the European Union. The Court of Justice has also stated (again while interpreting Article 98(1) of EC Regulation No 40/94) that a coercive measure, ordered by a Community trade mark court pursuant to its national law, in order to ensure compliance with a prohibition against further infringement or threatened infringement which it has issued, has effect in Member States to which the territorial scope of such a prohibition extends other than the Member State of that court, under the conditions laid down in the EC Regulation No 44/2001 (on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters). Where the national law of one of those other Member States does not foresee a coercive measure similar to the one ordered by the Community trade mark court, the purpose pursued by that measure must be attained by the relevant court of that other Member State pursuant to an internal provision which is such as to ensure an equivalent effect.


05/10/2011 | Trade Mark